ZOLL Medical Corporation v. Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd
Claim Number: FA2009001911544
Complainant is ZOLL Medical Corporation (“Complainant”), represented by Robert M. O’Connell of Orrick, Herrington & Sutcliffe LLP, Massachusetts, USA. Respondent is Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zollmedical.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 8, 2020; the Forum received payment on September 8, 2020.
On September 10, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <zollmedical.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 6, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@zollmedical.com. Also on September 16, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 9, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a recognized leader in therapeutic and diagnostic devices. Complainant has rights in the ZOLL mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,738,184, registered Dec. 8, 1992). Respondent’s <zollmedical.com> domain name is confusingly similar to Complainant’s mark. Respondent includes the ZOLL mark in its entirety and adds the term “medical” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <zollmedical.com> domain name as Respondent is not commonly known by the disputed domain name, nor did Complainant authorize Respondent to use the mark. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to an inactive webpage that offers links to third-parties.
Respondent registered and used the <zollmedical.com> domain name in bad faith as Respondent’s domain names resolves to a webpage that offers related links in an attempt to divert internet users away from Complainant. Respondent attempts to sell the disputed domain name. Respondent has engaged in a pattern of bad faith registration by registering multiple domain names that contains marks of others and has appeared in multiple UDRP proceedings in the past.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a recognized leader in therapeutic and diagnostic devices. Complainant has rights in the ZOLL mark through its registration with the USPTO (e.g. Reg. No. 1,738,184, registered Dec. 8, 1992). Respondent’s <zollmedical.com> domain name is confusingly similar to Complainant’s mark.
Respondent registered the <zollmedical.com> domain name on July 10, 2004.
Respondent lacks rights or legitimate interests in the <zollmedical.com> domain name. Respondent’s domain name resolves to an inactive webpage that offers links to third-parties.
Respondent registered and used the <zollmedical.com> domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the ZOLL mark due to its registration with the USPTO. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s <zollmedical.com> domain name is confusingly similar to Complainant’s mark. Registration of a domain name that contains a mark in its entirety and adds a term descriptive of its business along with a gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i).
Respondent lacks rights or legitimate interest in the <zollmedical.com> domain name. Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use the ZOLL mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Domain Privacy Guard Sociedad Anonima Ltd” and there is no other evidence to suggest that Respondent was authorized to use the ZOLL mark or was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to an inactive webpage that offers links to third-parties. Use of a disputed domain name to resolve to an inactive webpage with links to third-parties is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015)
Respondent attempts to sell the <zollmedical.com> domain name. Attempts to sell a disputed domain name for costs that exceed out-of-pocket expenses is evidence of bad faith per Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Here, Complainant has provided a screenshot that shows that the disputed domain name is sale for $21,000.00. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(i).
Respondent has engaged in a pattern of bad faith registration by registering multiple domain names that contains marks of others and has appeared in multiple UDRP proceedings where Respondent has been ordered to transfer the domain names. Registering multiple domain names that contain well-known and famous marks or being subject to prior UDRP decisions may be evidence of bad faith per Policy ¶ 4(b)(ii). See Blue Diamond Growers v. L Wood, FA 1464477 (Forum June 7, 2017) (finding evidence that the respondent had previously registered domain names infringing on famous third-party marks established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)), see also DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Therefore, the Panel may find that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(ii).
Respondent registered and used the <zollmedical.com> domain name in bad faith as Respondent’s domain name resolves to a webpage that offers related links in an attempt to divert internet users away from Complainant. Use of a disputed domain name to divert internet users may be evidence of bad faith per Policy ¶ 4(b)(iv). See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Here, Complainant has provided the Panel with a screenshot of Respondent’s <zollmedical.com> domain names resolving webpage that offers links to third-party services related to Complainant’s business. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zollmedical.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 21, 2020
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